Appeal No. 2005-2465
Application 10/293,373
would have reasonably inferred from the teachings of the reference that the amount of carbon
materials available for coking, including, for example, asphaltenes, have increased.
Accordingly, in view of the substantial evidence in the British Petroleum Example of a
process which reasonably appears to be identical or substantially identical to the claimed process
encompassed by appealed claim 1, we find that it further reasonably appears that the claimed and
prior art process prepare identical or substantially identical products, that is “substantially all of
the coke produced is substantially free-flowing anisotropic shot coke” as claimed. Indeed, on
this record, if there is a difference in properties between the shot coke produced by the claimed
process encompassed by claim 1 and the shot coke product produced by the process of the
British Petroleum Example, it must be due to a limitation that is not stated in claim 1. See In re
Sussman, 141 F.2d 267, 269-70, 60 USPQ 538, 541 (CCPA 1944) (“If appellant obtains a new
product through reaction of the elements mentioned, it must be due to some step in the process
not included in the claim.”).
Thus, the burden falls upon appellants to establish by effective argument or objective
evidence that the claimed process patentably distinguishes over the process disclosed by British
Petroleum, even though the rejection is based on § 103(a). See, e.g., In re Best, 562 F.2d 1252,
1255-56, 195 USPQ 430, 433-34 (CCPA 1977)(“Where, as here, the claimed and prior art
products are identical or substantially identical, or are produced by identical or substantially
identical processes, the PTO can require an applicant to prove that the prior art products do not
necessarily or inherently possess the characteristics of his claimed product. See In re Ludtke,
[441 F.2d 660, 169 USPQ 563 (CCPA 1971)]. Whether the rejection is based on ‘inherency’
under 35 USC 102, on ‘prima facie obviousness’ under 35 USC 103, jointly or alternatively, the
burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture
products or to obtain and compare prior art products. [Footnote and citation omitted.]”); In re
Skoner, 517 F.2d 947, 950, 186 USPQ 80, 82 (CCPA 1975) (“Appellants have chosen to
describe their invention in terms of certain physical characteristics . . . . Merely choosing to
describe their invention in this manner does not render patentable their method which is clearly
obvious in view of [the reference]. [Citation omitted.]”); cf. In re Spada, 911 F.2d 705, 708-09,
1992); In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968), presuming skill on
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